As of October 31, 2013, the Project on Commercializing Innovation is no longer active.
The Project is succeeded by the Hoover IP² Working Group on Intellectual Property, Innovation, and Prosperity. Hoover IP²

Chapter Five – Nonobviousness

Chapter five covers the requirement of nonobviousness, which originates from § 103.  The nonobviousness analysis was developed into a four factor test in Graham v. John Deere.  As mentioned in chapter four, that test is built on the prior art identified by § 102.  The introductory article by Judge Rich gives some important background on the motivation behind introducing a statutory requirement of nonobviousness and how that requirement differs from the common law concept of invention originating from Hotchkiss v. Greenwood in 1850.

The precise nature of the Graham test has changed recently with the Supreme Court’s decision in KSR v. Teleflex.  That case involves several pieces of prior art, and it may be helpful to read through the patents before reading the case.  The patents in the case are primarily mechanical and should be easily understandable, especially by those who have driven a car with adjustable pedals.

For an example of a European patent application, see the materials for Ex Parte Deuel.  Note that the claims themselves are presented in English, German, and French, which are the three working languages of the European Patent Office.


  1. The America Invents Act affects obviousness in two key ways.  First, it expands the available universe of prior art, as discussed in chapter four.  Second, there is a narrow provision stating that strategies for reducing, avoiding, or deferring tax liability are insufficient to differentiate a claimed invention from the prior art.  Rather than flatly state that tax strategies are unpatentable, the Act deems all tax strategies to be within the prior art.
  2. Recent Federal Circuit cases have continued to emphasize that adapting existing technologies for online or electronic use is likely obvious.  See, e.g., Western Union Co. v. MoneyGram Payment Systems, Inc., 626 F.3d 1361 (Fed. Cir. 2010); Innovention Toys LLC v. MGA Entertainment Inc., 637 F.3d 1314 (Fed. Cir. 2011).
  3. Objective evidence of nonobviousness.  The Federal Circuit underscored the importance of objective evidence of nonobviousness (Graham’s“secondary considerations”) in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., No. 2011-1555 (Fed. Cir. Nov. 15, 2012).  “As we have repeatedly held, evidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness.” Slip op. at 9.  The jury in that case had found each of seven objective factors indicated nonobviousness: commercial success, industry praise, unexpected results, copying, industry skepticism, licensing, and long-felt but unsolved need.  Nonetheless, the district court granted a motion for judgment as a matter of law, finding the asserted claims invalid as obvious.  The Federal Circuit reversed, holding that the patentee had “presented substantial evidence from which a reasonable jury could find that each of the seven objective factors supports the nonobviousness of [the patentee’s] claims.”  Id. at 11.  As the court noted, although “Few cases present such extensive objective evidence of nonobviousness, and thus we have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness. This, however, is precisely the sort of case where the objective evidence establishes that an invention appearing to have been obvious in light of the prior art was not.” Id. at 21 (citations and quotations omitted).
  4. Objective evidence, internationally.  For a comparison of the uses of objective evidence of nonobviousness by the legal systems in Canada, England, and America, seeNorman Siebrasse,“Secondary” Evidence of Obviousness is Not Secondary, 28 Canadian Intell. Prop. Rev. 279 (2012),available at  Siebrasse argues that in all three jurisdictions “secondary” evidence of nonobviousness should not be considered less important than “primary” evidence.



Current errata sheet for chapter 5.


Additional Source Material